Carl’s Jr. Restaurants LLCv.Burma Super Star, Inc.

Trademark Trial and Appeal Board

Jul 12, 2019

91226465 (T.T.A.B. Jul. 12, 2019)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: April 11, 2019 Mailed: July 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Carl’s Jr. Restaurants LLC

v.

Burma Super Star, Inc.
_____

Opposition No. 91226465
_____

Steven J. Nataupsky, Michael K. Friedland and Gregory B. Phillips of Knobbe,
Martens, Olson & Bear, LLP
for Carl’s Jr. Restaurants LLC.
Janis Ing and Joseph V. Mauch of Shartsis Friese LLP
for Burma Super Star, Inc.
_____

Before Mermelstein, Wellington, and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Burma Super Star, Inc. (“Applicant”) filed an application seeking registration on
the Principal Register of the mark BURMA SUPERSTAR in standard characters
(BURMA disclaimed) for the following goods and services:1

1 Application Serial No. 86585818 filed on April 2, 2015. For the goods in International
Classes 29 and 30, the application is based on Section 1(a) of the Trademark Act (“the Act”),
15 U.S.C. § 1051(a), alleging first use of the mark on the goods anywhere and in commerce
on November 24, 2014. For the Class 43 services, the application is also based on use,
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Tea leaf salads in the nature of vegetable salads; lotus chips in the nature
of vegetable chips; pre-cooked curry stew; packaged entrees consisting
primarily of meat, fish, poultry or vegetables; prepared entrees consisting
primarily of meat, fish, poultry or vegetables; frozen entrees consisting
primarily of meat, fish, poultry or vegetables; nut and seed snack mix;
prepared nut and seed mix for topping salads in International Class 29;

Salad dressing; tea leaf snack bars; coconut rice, namely, cooked rice
prepared with coconut milk; tea leaf-based snack foods, namely, tea leaf
clusters in International Class 30;

Non-alcoholic beverages, namely, carbonated beverages; ginger ale; ginger
beer; ginger lemonade; ginger flavored beverages in International Class 32;
and

Restaurants in International Class 43.

Carl’s Jr. Restaurants LLC (“Opposer”) opposes registration of the applied-for
mark on the following grounds: the application is void ab initio because Applicant
was not the owner of the mark at the time the application was filed; likelihood of
confusion; dilution; and abandonment.2 Applicant filed its Answer denying the salient
allegations in the notice of opposition.3
The parties have fully briefed this opposition proceeding4 and, on April 11, 2019,
both parties presented arguments during an oral hearing before the Board.

claiming a first use date of March 18, 1992. And, with respect to the Class 32 goods, the
application is based on an alleged bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act (“the Act”), 15 U.S.C. § 1051(b).
2 31 TTABVUE (Notice of Opposition, as amended); the Board previously granted Opposer
leave to file an amended notice of opposition (28 TTABVUE).
3 32 TTABVUE (Answer, as amended).
4 52, 55 TTABVUE (Opposer’s main and rebuttal briefs); 53 TTABVUE (Applicant’s brief).
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I. Standing
A threshold issue in each inter partes case is the plaintiff’s standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010).
Opposer has established its standing by properly making of record under notice of
reliance several of its pleaded registrations, including Registration No. 1099039 for
the mark SUPER STAR for “preparing and serving hamburgers as part of restaurant
services,”5 and Registration No. 4704436 for the mark SUPER STAR REWARDS for
“arranging and conducting incentive programs to promote the sale of food and
beverage items for consumption on or off the premises” in Class 35.6 These
registrations serve as a basis for Opposer’s likelihood of confusion claim that is not
wholly without merit. Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). Because Opposer has established its standing to assert
its Section 2(d) claim, it has standing to pursue the other grounds for opposition. See,
e.g., Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB 2011).

5 Opposer’s First Notice of Reliance (33 TTABVUE 13-16).
6 Id. 44-51.
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II. Application is Void Ab Initio Because Applicant Was Not the
Owner of the Mark at the Time of Filing the Application
(Classes 29, 30, and 43)
a. Background
Desmond Tan is Applicant’s president and CEO and has provided key testimony
regarding the chain of title of the applied-for mark.7
In 1992, the Burma Superstar restaurant opened in San Francisco, California.8
In 2001, East-West Holdings (“EWH”) purchased the BURMA SUPERSTAR
restaurant in San Francisco.9
Today, there are currently three BURMA SUPERSTAR restaurants – the original
(in San Francisco), one in Alameda and one in Oakland.10
In 2007, EWH was granted a registration (Reg. No. 3429916) for the mark
BURMA SUPERSTAR in connection for restaurant services.11 Tan testified the
registration was cancelled on December 26, 2014, “due to inadvertent failure to file a
required document.”12
Tan testified that, in 2007 and 2008, EWH entered into oral non-exclusive license
agreements with two different entities owned by Tan, allowing them to use the
BURMA SUPERSTAR mark in connection with two additional restaurants in

7 40 TTABVUE 46-84 (Tan declaration) and 45-48 TTABVUE (Cross-examination testimonial
deposition of Tan, and exhibits).
8 40 TTABVUE 46.
9 Id.
10 45 TTABVUE 8.
11 Id. at 47.
12 Id.
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Alameda and Oakland, California.13 At the time, Carl Velasco (“Velasco”) was the sole
shareholder of EWH.14
Tan was married to Joycelyn Lee (“Lee”) and Tan testified that Lee became the
sole owner of EWH in approximately 2007-2009.15
Tan originally testified that in “2007 and 2008” EWH “orally assigned the BURMA
SUPERSTAR mark and all related licenses to [Tan].”16 Tan further testified that in
2014, he assigned the mark to Applicant, Burma Super Star, Inc.17 On cross-
examination, however, Tan testified that EWH “transferred” ownership of the mark
to Tan in 2015 because Tan “wanted ownership” and “wanted to have it personally in
[his] name.”18 In other words, on cross-examination, Tan contradicted his earlier
testimony that he acquired the mark in “2007 and 2008.” Indeed, if EWH had
assigned the mark to Tan in 2007 or 2008, as Tan testified originally, EWH would
have been unable to assign it in 2015. Likewise, if EWH did not assign the mark to
Tan until 2015, Tan could not have assigned the mark to Applicant in 2014. Thus,
either Tan’s original testimony, or his testimony on cross-examination, was incorrect.

13 Id. at 46-47.
14 45 TTABVUE 12, 19-21.
15 Id. at 20.
16 40 TTABVUE 46-47.
17 Id.
18 45 TTABVUE 45.
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In any event, on April 2, 2015, Applicant filed the involved application asserting
that it is the owner of the BURMA SUPERSTAR mark for the goods and services
listed in Classes 29, 30, and 43 of the application.
On February 22, 2016, in what also seems to contradict Tan’s testimony regarding
the purported assignment of the mark from EWH to Tan in either “2007 and 2008”
or 2015, the involved application was opposed by Lee and EWH who alleged that
Applicant “and/or [Tan] is not the true owners or sole owners . . . of the mark” BURMA
SUPERSTAR.19
In his testimony, Tan acknowledged the opposition and noted that it was
withdrawn based on a settlement agreement that included an assignment of rights
in the BURMA SUPERSTAR mark – specifically, Tan testified:20
In March 2017, [Tan, Lee and EWH] entered into a settlement agreement.
A true and correct copy of that settlement agreement is attached as Exhibit
F. On June 5, 2017, Ms. Lee and [EWH] withdrew their opposition to
registration of the BURMA SUPERSTAR mark based on the settlement.
Among other terms in the settlement agreement, Ms. Lee and [EWH]
agreed to assign any and all purported rights in the BURMA SUPERSTAR
mark to Applicant, and Applicant agreed to grant an irrevocable,
unassignable license to Ms. Lee providing her the exclusive right to use the
BURMA SUPERSTAR mark in connection with the operation of the full-
service BURMA SUPERSTAR restaurant in San Francisco. Ms. Lee has
committed to maintain the nature and quality of the goods and services
provided in connection with the BURMA SUPERSTAR mark at the San
Francisco restaurant, and the parties are working to further document the
agreed-upon assignment and license.

19 A copy of that notice of opposition was submitted by Opposer under Notice of Reliance (35
TTABVUE 54-56). A copy of a Notice of Withdrawal of Opposition, filed by joint opposers Lee
and EWH on June 5, 2017, was also submitted. Id. at 58.
20 Id. at 51. A copy of the hand-written agreement is attached to the declaration as Exh. F
(40 TTABVUE 83-84).
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The actual terms of the referenced agreement include, “2. [Lee] gets the 3 SF
restaurants. 3. [Tan] gets the other restaurants and Burma Superstar trademark.”21
Tan also testified that later, in October 2017, he filed a declaration in a California
civil action involving Lee, wherein he averred that:22
I have a clear recollection of the negotiations relating to the Burma
SuperStar Trademark. It was important that I (or rather a corporation
owned and controlled by me) controlled the Burma SuperStar trademark
in order to protect it. In addition, I saw value in this trademark going
forward and the additional $ 700,000 I agreed to pay to Joycelyn Lee was
in large part a payment for my sole ownership of the trademark.

b. Analysis
Pursuant to Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), only
“[t]he owner of a trademark used in commerce may request registration of its
trademark ....” Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635
n.6 (CCPA 1976) (“One must be the owner of a mark before it can be registered.”); In
re Deister Concentrator Co., 289 F.2d 496, 129 USPQ 314, 320 (CCPA 1961) (“Under
section 1, only ‘The owner of a trademark’ can apply for registration.”). Therefore,
“[a]n application filed by one who is not the owner of the mark sought to be registered
is a void application.” In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB
1991) (citing In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982)); see also Huang

21 40 TTABVUE 83.
22 45 TTABVUE 105-07, 48 TTABVUE 13-17 (Tan Dep. Ex. 107 copy of Tan declaration filed
in Superior Court of the State of California, County of San Francisco, Case No. CGC 15-
547404) on October 12, 2017. A copy of an unsigned “Trademark Assignment” (“Final
Execution Version”) was also submitted with the Tan deposition (Ex. 108, 48 TTABVUE 18-
20), but Tan testified that he did not recall this document. Because it is unclear whether this
version of the assignment was indeed final or whether it was ever executed, we have not
relied on it.
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v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) (affirming
Board’s holding that an application was void ab initio because the applicant was not
the owner of the mark on the filing date); Great Seats Ltd. v. Great Seats Inc., 84
USPQ2d 1235, 1239 (TTAB 2007) (“In a use-based application under Trademark Act
Section 1(a), only the owner of the mark may file the application for registration of
the mark; if the entity filing the application is not the owner of the mark as of the
filing date, the application is void ab initio.”); Trademark Rule 2.71(d), 37 CFR
§ 2.71(d) (“An application filed in the name of an entity that did not own the mark as
of the filing date of the application is void.”).
The involved application, as filed, included a claim by Applicant that it was the
owner of the mark under Section 1(a) with respect to the goods and services in Classes
29, 30, and 43 (see Note 1).23 As to the goods identified in Class 32, Applicant did not
allege that it was the owner of the mark, but only that it had a bona fide intent to use
the mark and was “entitled” to do so under Section 1(b).24 Accordingly, Opposer’s non-
ownership claim is only applicable to Classes 29, 30, and 43.

23 The standard declaration for a use-based application under Section 1(a) of the Act includes
an averment that “[t]he signatory believes that the applicant is the owner of the
trademark/service mark sought to be registered. The mark is in use in commerce on or in
connection with the goods/services in the application.”
24 In contrast to the Section 1(a) declaration (see previous note), there is no statutory
requirement that the filer of an intent-to-use application under Section 1(b) allege that the
applicant is the owner of the mark at the time of filing of the intent-to-use application.
Rather, the standard declaration for an intent-to-use filer includes an averment that “[t]he
signatory believes that the applicant is entitled to use the mark in commerce. The applicant
has a bona fide intention to use the mark in commerce on or in connection with the
goods/services in the application.”
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Based on the record, particularly the Tan testimony, we find that Applicant was
not the sole owner of the BURMA SUPERSTAR mark in April 2015 when it filed the
involved use-based application. As discussed, Tan’s two different versions of how the
mark was assigned to him (and then on to Applicant) before April 2015 are not only
inconsistent, but are also contradicted by other evidence showing that an assignment
was necessary and executed in 2017. With respect to the 2017 transaction, Tan stated
that he paid $700,000 to Lee, “in large part . . . for . . . sole ownership of the
trademark.”25 But if that is so, Tan did not have sole ownership which could have
been conveyed to Applicant prior to the April 2, 2015, filing date of the subject
application.
In order for testimony to be credible and probative, it “should not be characterized
by contradictions, inconsistencies, and indefiniteness but should carry with it
conviction of its accuracy and applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d
580, 66 USPQ 232, 236 (CCPA 1945); see also, Cerveceria Centroamericana v.
Cerveceria India, 892 F.2d 1021, 13 USPQ2d 1307, 1312 (Fed. Cir. 1989) (the
testimony of the witness regarding use was afforded little weight because it was “to
say the least, vague.”) Tan’s testimony regarding purported assignments of the mark
prior to April 2015, as pointed out, is inconsistent and thus lacks sufficient credibility.
Rather, the preponderance of the evidence demonstrates that before and after April
2015, there were various ownership claims still being asserted by, at least, Tan, EWH
or Lee. Applicant’s principal, Tan, did not ultimately acquire sole ownership of the

25 45 TTABVUE 105-07, 48 TTABVUE 13-17 (Tan Dep. Ex. 107).
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mark until March 2017, when he reached a written settlement with Lee and EWH
and had all asserted rights in the mark assigned to him. In any event, the point is
that while the record does not clearly establish exactly who owned the mark or when,
it is clear that Applicant was not its sole owner on the application’s filing date.
Applicant argues that Tan, “though he was not formally listed ‘on paper with the
company, for all intents and purposes he acted as and was treated as the ‘actual
owner’ of EWH and the operator of the BURMA SUPERSTAR restaurant.”26
Applicant states that, regardless of whether Tan had control over EWH, the Board
may “still find that the [oral] assignment from EWH to Mr. Tan was valid” because
“EWH could and did assign the mark to whomever it wanted.”27 Applicant also plays
down the allegations of Lee and EWH in their opposition to the involved application
(which was later withdrawn) asserting that the opposition was filed “years after the
assignment as part of her larger dispute with Mr. Tan over the separation of assets”
and it “does not prove that the earlier assignment to Mr. Tan was improper, that Ms.
Lee or EWH disapproved of the assignment at the time it was made.”28 With respect
to the 2017 settlement agreement, Applicant characterizes it as a “settlement
agreement between Mr. Tan (and his entities) and Ms. Lee (and her entities)
resolving their asset separation dispute” and notes that Tan testified that the reason
for the assignment of trademark rights provision was not because he believed Lee

26 53 TTABVUE 46.
27 Id.
28 Id.
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had an ownership interest but because Tan wanted a “global settlement” that would
end any dispute about the trademark.”29
Applicant’s arguments do not persuade us that Applicant was the sole owner of
the BURMA SUPERSTAR mark in 2015. In order for Applicant to own the mark, Tan
must have possessed sole rights in the mark when, as Applicant argues, Tan assigned
the mark to Applicant in 2014. There are two critical flaws in this purported chain of
title.
First, there is no testimony that anyone with authority to act on behalf of EWH
assigned the mark to Tan in 2007 or 2008. Tan acknowledges that he was not the
owner of EWH when the mark was purportedly orally assigned in 2007 or 2008. Thus,
Tan, himself, did not have any authority to orally assign rights to the mark. Tan does
not identify either of the previous owners, Lee or Velasco, who actually had authority
to act on behalf of EWH, as making the purported oral assignment. There is no
testimony from EWH that an oral assignment took place. Tan’s testimony regarding
the oral assignment has not been corroborated, and is contradicted by other evidence.
The record, discussed supra, persuades us that Applicant, or Tan, at best received
full ownership of the mark, if ever, by way of an assignment nearly two years after
the application was filed.
Applicant’s assertion that it was the owner of the mark by April 2015 is also
contradicted by the fact that, at that time and at least up to 2017, EWH was using
the BURMA SUPERSTAR mark in connection with its San Francisco restaurant. By

29 Id. at 47, citing to Tan Dep. at 45 TTABVUE 107.
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2013, by Tan’s own admission, he (and Applicant) had no control over EWH or Lee
because his “romantic partnership” with Lee had ended by 2013 and there “was not
a formal business relationship” between the two or their respectively-owned business
entities.30 Thus, whether an oral assignment of the mark took place in 2007/2008, by
one account of Tan’s, or there was an assignment 2015, by the other account of Tan,
we find that EWH retained at least some ownership rights in the BURMA
SUPERSTAR mark because it continued to use BURMA SUPERSTAR for the San
Francisco restaurant at least until 2017, without any license or transfer of rights back
to EWH. To this point, on cross-examination and in response to questioning whether
Applicant has licensed the mark to anyone else for use, Tan testified Applicant
granted EWH such a license but not until 2017.31 Because EWH or others, perhaps
including Lee or Tan, were a partial, if not exclusive, owner(s) of the mark as of April
2015 when the application was filed, Applicant was not the sole owner of the mark.
As discussed, supra, we acknowledge Tan’s testimony, on cross-examination, that
EWH transferred all rights in the mark to Tan personally in 2015 and, in the same
year, he transferred those rights to Applicant – we find, however, this testimony in
not entirely credible. As pointed out, it contradicts his earlier written declaration that
an oral assignment from EWH to Tan occurred in 2007/2008 and he assigned the
mark to Applicant in 2014. Moreover, with respect to the more recent purported
assignment in 2015, Tan could not recall whether there was a written assignment or

30 40 TTABVUE 51.
31 Id. at 49.
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if any consideration was paid, nor did he testify who on behalf of EWH signed or
authorized the assignment.32 The existence of any 2015 assignment is further drawn
into question, if not rebutted, by EWH’s filing the opposition to registration of the
involved application on the basis of ownership approximately one year after EWH
purportedly assigned the mark. Perhaps the most telling with respect to Tan (or
Applicant’s) lack of full ownership of the mark, as of April 2015, was Tan’s statement
made in a separate civil action involving Tan and Lee, that he paid Lee $700,000.00
in 2017 “in large part . . . for my sole ownership of the mark.”
We have considered the fact that Tan has been intimately involved with the
BURMA SUPERSTAR restaurant businesses since 2001 when EWH purchased the
first restaurant. However, we are also mindful that regardless of a single individual’s
efforts or own beliefs regarding ownership, the use-based application must be filed in
the name of the owner or owners of the mark. See, e.g., Tzu Wei Chen Food Co., 7
USPQ2d 1335 (application was void when signed by an individual in his own name
because his separate application for incorporation in the state of Iowa was granted,
and ownership of the mark passed to the corporation, albeit only two days before the
USPTO received the trademark application for filing).
c. Lack of Ownership - Conclusion
Applicant was not the exclusive or sole owner of the BURMA SUPERSTAR mark
when it filed the application in April 2015, as required under Section 1(a) of the
Trademark Act. “Neither the Board nor the courts can waive this statutory

32 45 TTABVUE 46.
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requirement,” Tzu Wei Chen, 7 USPQ2d at 1336, even if Applicant later acquired full
rights in the mark. Accordingly, the application was void ab initio, and we sustain
the opposition on this ground, with respect to Classes 29, 30, and 43.
We now turn our attention to the remaining pleaded grounds of likelihood of
confusion and dilution – solely with respect to Applicant’s Class 32 goods.33
III. Likelihood of Confusion
In support of its likelihood of confusion claim, Opposer pleaded use since 1975 and
registration of marks “including the words ‘SUPER STAR’ . . . in connection with food
items, restaurant services, and other goods and services.” Specifically, as previously
discussed, Opposer pleaded ownership of Reg. No. 1099039 for the mark SUPER
STAR for “preparing and serving hamburgers as part of restaurant services.” Opposer
also pleaded ownership of Reg. No. 4704436 for the mark SUPER STAR REWARDS
for “arranging and conducting incentive programs to promote the sale of food and
beverage items for consumption on or off the premises” in Class 35.34
For purposes of our likelihood of confusion analysis, we focus on the two pleaded
registered marks, SUPER STAR, and SUPER STAR REWARDS, because they bear
the closest resemblance to Applicant’s mark, BURMA SUPERSTAR. Although

33 The ground of abandonment is not available with respect to the Class 32 goods because
this class is based on a bona fide intent to use in commerce (see Notes 1 and 21). Qualcomm
Inc. v. FLO Corp., 93 USPQ2d 1768, 1770 (TTAB 2010).
34 A copy of Reg. No. 4704436 was properly introduced through Opposer’s notice of reliance
(33 TTABVUE 44-51). The registration also covers “computer application software for mobile
devices, namely, software for use with incentive programs to promote the sale of food and
beverage items for consumption on or off the premises.” However, these goods are less related
(than the Class 35 services) to Applicant’s class 32 goods.
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Opposer asserted ownership and registration of other marks, we find all of the other
pleaded marks, containing the term STAR or a star design, are so different from
Applicant’s proposed mark that the dissimilarity of the marks would dictate a finding
that confusion would not be likely between those marks, even if all other factors
weighed in Opposer’s favor. Kellogg Co. v. Pack-Em Enters., Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case,
a single du Pont factor may not be dispositive.”).
Our determination of the issue of likelihood of confusion is based on an analysis
of all probative facts in evidence that are relevant to the factors set forth in In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (du
Pont “articulated thirteen factors to consider when determining likelihood of
confusion”). Similarity of the marks and relatedness of the goods or services tend to
be the two key determinants of likelihood of confusion. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). Finally, priority is not an
issue because Opposer’s registrations are of record and Applicant has not
counterclaimed to cancel either. See Top Tobacco LP v. N. Atl. Operating Co., 101
USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974)).
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A. Similarity of the Marks
The first du Pont factor involves a determination as to “the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Pont, 177 USPQ at 567).
Here, the obvious similarity is that Applicant’s mark, BURMA SUPERSTAR,
incorporates Opposer’s entire SUPER STAR mark and shares the wording with
Opposer’s other mark SUPER STAR REWARDS. The fact that the same wording
“superstar” or “super star” is in the marks makes them similar in appearance and
sound.
Although Applicant has disclaimed the term BURMA in the involved application,
this is a point of dissimilarity between the involved marks. While it may be
descriptive of Applicant’s goods and services, the similarity or dissimilarity of the
marks is determined based on the entire marks, not just part of the marks. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). Thus, while
BURMA is conceptually weak, it remains part of Applicant’s mark and contributes to
its appearance, pronunciation, and meaning. Likewise, while the term REWARDS is
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clearly descriptive in the context of Opposer’s “incentive programs” and thus does not
have source-identifying significance, it is a point of dissimilarity between the marks.
In terms of commercial impression or connotation and in the context of both
parties’ goods and services, we take judicial notice of the following definition for the
word “Super Star”:35
1. : a star (as in sports or the movies) who is considered extremely talented, has great
public appeal, and can usually command a high salary

“But last year, when people started posting hits from superstars like Madonna and
Puff Daddy on the Web, where anyone could download them for free, the record
companies went ballistic.”
— N'Gai Croal et al.

“The notion that superstars are protected by NBA refs is neither a new nor a
particularly farfetched one.”
— Jack McCallum

2. : one that is very prominent or is a prime attraction

“From Wolfgang Puck to Alice Waters, America’s leading chefs have become
superstars.”
— Marian Burros

“With that the judge sentenced the one time superstar investor to three years in prison
for his role in the largest insider-trading scandal in history.”
— Time Magazine

“Chardonnay is the superstar among white-wine grapes …”
— Barbara Ensrud

35 “SUPER STAR” Merriam-Webster.com. 2019 (www.merriam-webster.com). The Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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In other words, the term is suggestive of success or high quality – whether it is an
individual such as a chef, or a product like chardonnay. In the context of Opposer’s
services the term will likely be understood as self-congratulatory or puffery,
suggesting a high degree of popularity or quality of the services.
With respect to Applicant’s carbonated and ginger-flavored beverages, the term
BURMA will likely be understood as describing or suggesting an affiliation with the
country Burma (or Myanmar), such as the beverages deriving from a Burmese recipe
or style of drink, or being imported from Myanmar (formerly known as Burma). It
thus adds an additional exotic connotation, not present in Opposer’s marks, to the
same wording, SUPER STAR.
In sum, while there are some differences in the marks, we find that overall they
are more similar than not. This factor therefore weighs in favor of finding a likelihood
of confusion.
B. Purported Fame of Opposer’s Marks; Alleged Weakness of
Shared Wording SUPER STAR
In support of its likelihood of confusion claim, Opposer has pleaded:36
Opposer, through substantial use and promotion, has acquired significant
goodwill and consumer recognition in Opposer’s Marks. In addition, by
virtue of substantial use and promotion, Opposer’s Marks have become
famous in the minds of consumers. Opposer’s Marks became famous in the
minds of consumers long before Applicant filed the Application.

Under the fifth du Pont factor, 177 USPQ at 567, the fame of a mark plays a
“dominant” role in the du Pont analysis, as famous marks “enjoy a wide latitude of

36 31 TTABVUE 7 (Notice of Opposition ¶ 2).
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legal protection.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000); see also Palm Bay Ims., 73 USPQ2d at 1694 (“[A] strong mark …
casts a long shadow which competitors must avoid.”). A famous mark is one that has
“extensive public recognition and renown.” Fame for purposes of likelihood of
confusion is a matter of degree that varies along a spectrum from very strong to very
weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017). Relevant factors include sales, advertising,
length of use of the mark, market share, brand awareness, licensing activities, and
variety of goods bearing the mark. Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Much of the record that Opposer relies upon to support its allegation of fame for
the SUPER STAR and SUPER STAR REWARDS marks involves the general success
and popularity of its national chain of CARL’S JR. restaurants. Nevertheless, there
is sufficient circumstantial evidence to show that Opposer’s SUPER STAR mark has
achieved an elevated degree of recognition. Specifically, Opposer has been using the
SUPER STAR mark in connection with its burgers served at its restaurants for a long
time, since 1975, and there is evidence showing that one of Opposer’s signature
hamburgers is called the “Super Star,” with an impressive number of these burgers
having been sold between 2012-2018, and Opposer has spent a significant amount on
advertising the “Super Star” burger during these same years.37 This evidence, alone,

37 50 TTABVUE 88-110; 43 TTABVUE (Morrow Exs. 28-29). We do divulge the amounts
sold and advertising expenses because this information has been designated “confidential.”
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leads us to conclude that a large number of consumers in the United States are
familiar with Opposer’s “Super Star” burger being offered in Opposer’s Carl’s Jr.
restaurants.
In sum, a substantial number of U.S. consumers have been exposed to Opposer’s
SUPER STAR mark in connection with hamburgers served in Opposer’s restaurants.
Opposer’s mark is commercially strong thus expanding its scope of protection.
Applicant, on the other hand, argues that there is a “crowded field” of STAR-
formative marks and that this “diminishes the strength” of Opposer’s marks.38 In
support, Applicant points to:39
over one hundred . . . [registered] marks in Classes 29, 30, 32, and 43
incorporating the word STAR, including numerous SUPER STAR MARKS.
These registrations include ROADSTAR (hamburgers), ALL STAR
(cheese), GOLDEN STAR (lunch meats), and SICILIAN STAR (Italian food
30 products) in Class 29; DELTA STAR (rice), SUPER STAR PROOF
(dough developers), (SUPER STARS) (bakery products), TROPIC STAR
(tea), BIG STAR (coffee), and CORN STAR (relish) in Class 30; BLUE
STAR (beer), FIVE STAR (beer), and TEXAS STAR (soft drinks) in Class
32; and ALLSTARBURGERS (restaurant services not in the nature of
quick service restaurants), STARS DRIVE-IN (restaurant services,
specifically fast food drive in services), BURGER STAR (restaurant and
bar services), ALL STAR WINGS (restaurant services not in the nature of
quick service restaurants), EVENING STAR (restaurant and bar services),
FIVE STAR BURGERS (restaurant services not in the nature of quick
service restaurants), and CHINA STAR (restaurant services).

The sixth du Pont factor requires us to consider the number and nature of similar
marks in use on similar services. du Pont, 177 USPQ at 567. In this regard, the
Federal Circuit has stated that evidence of the extensive registration and use of a

38 53 TTABVUE 36.
39 Id. 36-37; copies of the registrations were submitted under notice of reliance at 38
TTABVUE.
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term by others can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
In this case, Applicant’s third-party registration evidence has little probative
value. Nearly all of the registered marks merely contain the term STAR and they
have additional wording that makes them dissimilar to Opposer’s SUPER STAR
marks. Cf. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed.
Cir. 2017) (extensive use of similar marks by third parties for the same or similar
goods or services also is relevant to a mark’s commercial strength) (emphasis added).
Only four of the registrations include the term SUPER STAR and they are for
unrelated goods: fish;40 “dough developers and conditioner;”41 bakery products;42 and
distilled spirits, teas, wine and rum.43 Finally, Applicant has not submitted any
evidence of third-party use of relevant STAR-formative marks. “The existence of
[third party] registrations is not evidence of what happens in the market place or that
customers are familiar with them. . . .” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 1406, 177 USPQ 268, 269 (CCPA 1973), quoted in Olde Tyme Foods Inc. v.
Roundy’s Inc., 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). While, as noted, evidence of
extensive registration and use may have evidentiary value, Jack Wolfskin, 116

40 Registration No. 2114138; 38 TTABVUE 72-75.
41 Registration No. 1272031 (SUPER STAR PROOF); Id. 263-265.
42 Registration No. 4375883 (SUPER STARS); Id. 287-290.
43 Registration No. 1272031 (SUPER STAR BRAND and design); Id. 326-330.
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USPQ2d at 1136, Applicant here has supplied only registrations — most of which are
of little relevance — and no evidence of use.
Ultimately, although Applicant has submitted numerous third-party
registrations, they have little relevance for purposes of showing that the strength of
Opposer’s SUPER STAR marks is diminished due to extensive third-party use of
similar marks in connection with similar goods or services.
C. Similarity or Dissimilarity of the Goods and Services; Trade
Channels; Sophistication and Classes of Consumers

The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration.’” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting du
Pont, 177 USPQ at 567); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). “[L]ikelihood of confusion can
be found ‘if the respective products are related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.’” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Here, we looking to determine the relationship, if any, between Opposer’s
“preparing and serving hamburgers as part of restaurant services” and its “arranging
and conducting incentive programs to promote the sale of food and beverage items for
consumption on or off the premises,” with Applicant’s Class 32 goods, namely,
carbonated and ginger-flavored beverages.
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At the outset, we point out that in cases where restaurant services are being
compared to actual food or drink items, there is no per se rule that certain goods and
services are related. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d
2027, 2030 (Fed. Cir. 1993) (no per se confusion, where similar marks are used in
connection with restaurant services and food products). Rather, often when it comes
to restaurant services and food or beverages, “something more” is required (over and
above a showing that the goods and services are offered together) because the
relatedness of the parties’ respective goods and services is not evident. In re Opus
One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001).44 In In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059, 1063-64 (Fed. Cir. 2003), the Federal Circuit assessed
whether “something more” showed the relatedness of beer and restaurant services.
The court explained why more evidence than just showing restaurants sell beer is
required to prove that those beer and restaurant services are related:
It is not unusual for restaurants to be identified with particular food or
beverage items that are produced by the same entity that provides the
restaurant services or are sold by the same entity under a private label.
Thus, for example, some restaurants sell their own private label ice cream,
while others sell their own private label coffee. But that does not mean that
any time a brand of ice cream or coffee has a trademark that is similar to
the registered trademark of some restaurant, consumers are likely to
assume that the coffee or ice cream is associated with that restaurant. The
Jacobs case [Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641
(CCPA 1982)] stands for the contrary proposition, and in light of the very
large number of restaurants in this country and the great variety in the
names associated with those restaurants, the potential consequences of
adopting such a principle would be to limit dramatically the number of
marks that could be used by producers of foods and beverages.

44 4 TTABVUE 8.
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Id. at 1063.
In this case, Opposer argues that it has demonstrated “something more” because
“the evidence shows that [Opposer’s SUPER STAR marks] are arbitrary and strong
marks,” citing the Board’s decision in In re Opus One, Inc., 60 USPQ2d 1812 (TTAB
2001).45 Opposer also asserts that the “non-alcoholic carbonated beverages, which
Opposer sells . . . are included in the food and beverages identified in the SUPER
STAR REWARDS registration.”46 Opposer concludes that Applicant’s goods “include,
or are at least highly related to, the services listed in Opposer’s SUPER STAR and
SUPER STAR REWARDS registrations.”47
The relevant evidence here is significantly different from that in In re Opus One.
In that decision, the applicant was seeking to register an identical mark, OPUS ONE
for restaurant services, as the cited registered mark for wine. The Board also relied
on evidence showing that “it is an increasingly common practice in the industry for
restaurants to offer and serve to their patrons ‘private label’ wines which are named
after the restaurant, i.e., wine which is specially-made for the restaurant and served
in bottles labeled with the restaurant's service mark.” Id. at 1815. Furthermore, the
Board noted that the applicant’s OPUS ONE restaurant was actually selling the cited
registrant’s OPUS ONE wine.

45 55 TTABVUE 9.
46 55 TTABVUE 9.
47 Id.
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Opposer’s argument regarding the strength of its mark and our finding that
Opposer’s SUPER STAR mark does have an elevated level of recognition in
connection with fast food, and the service of hamburgers in particular, do not
persuade us that consumers would associate its services of preparing hamburgers as
a part of restaurant services with Applicant’s carbonated and ginger flavored
beverages. While it is well-known that restaurants serve beverages with meals, this
alone is insufficient to show a relationship that likely leads to confusion. To borrow
words and reasoning from In re Coors Brewing, restaurants can be known for a
particular food or beverage product and sell these products under the same name as
the restaurant, but “that does not mean that any time a brand of [food or beverage]
has a trademark that is similar to the registered trademark of some restaurant,
consumers are likely to assume that the [food or beverage] is associated with that
restaurant.” In re Coors Brewing, 68 USPQ2d at 1063. The evidence does not
establish the “something more” required to find a relationship between Applicant’s
goods and Opposer’s services.
With respect to Opposer’s “arranging and conducting incentive programs to
promote the sale of food and beverage items for consumption on or off the premises,”
these are even further removed from Applicant’s carbonated and ginger flavored
beverages. That is, Opposer’s services are promotional in nature and only
tangentially involve beverages. Again, there is no evidence showing consumers are
accustomed to encountering the respective services and goods under the same mark
from a single source.
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As to the third du Pont factor, involving the established, likely-to-continue
channels of trade, the identifications in the application and Opposer’s registrations
have no restrictions on channels of trade. Thus we must presume that the goods and
services travel in all channels of trade appropriate for such goods and services. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002)). It is well-known that restaurants serve carbonated beverages and
the record shows that Opposer’s restaurants do indeed serve soft drinks, like Coca-
Cola and Sprite. Accordingly, we must assume that Applicant’s goods would be served
in restaurants, like Opposer’s. Additionally, Opposer’s services and Applicant’s goods
would be offered to all usual consumers for the goods and services, including the
general public.
D. Likelihood of Confusion -- Conclusion
We have carefully considered all of the evidence of record, including any evidence
not specifically discussed herein. As discussed, several du Pont factors support a
finding of a likelihood of confusion. Nevertheless, we ultimately find that Opposer
has not proven by a preponderance of the evidence that consumers familiar with
Opposer’s SUPER STAR or SUPER STAR REWARDS marks for the identified
services who encounter Applicant’s BURMA SUPERSTAR mark for carbonated and
ginger-flavored beverages are likely to believe mistakenly that the goods and services
originate with, or are sponsored or authorized by the same source. We base our
conclusion primarily on the dissimilarity between Applicant’s carbonated and ginger-
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flavored beverages and Opposer’s restaurant and incentive program services; we also
bear in mind that the initial term, BURMA, in Applicant’s mark helps distinguish
the marks and the shared term, SUPER STAR, suggests a higher quality of goods or
services.
Accordingly, the likelihood of confusion claim is dismissed as to Applicant’s Class
32 goods.
IV. Likelihood of Dilution
Opposer's pleaded claim of dilution requires proof of fame of the mark SUPER
STAR. As discussed in the context of the likelihood of confusion analysis, the record
indicates an elevated level of exposure to this mark, mainly in connection with
hamburgers, but the evidence falls far short of demonstrating that Opposer's mark is
famous for purposes of likelihood of confusion, and thus cannot be famous for
purposes of dilution. Fame for dilution purposes requires a more stringent showing.
Palm Bay Imps., 73 USPQ2d 1694; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170
(TTAB 2001). Accordingly, the claim of dilution is dismissed.
Decision: The opposition is sustained as to Classes 29, 30, and 43. The opposition
is dismissed with respect to Class 32.